This page contains a consolidated list of all recently pending petitions, organized in reverse chronological order by date of certiorari petition.
Power Integration, Inc. v.
Fairchild Semiconductor Int'l, Inc., No. 13-269
Question Presented: In this case, a jury found that respondent Fairchild
Semiconductor committed patent infringement and induced
infringement by others—in the United States—after it
reverse-engineered and mass produced petitioner Power
Integrations' patented technology for controller chips that are
used in power supplies (or chargers) for consumer electronic
devices such as smart phones. The jury also found that this
U.S.-based infringement directly and foreseeably caused Power
Integrations to lose sales of its chips worldwide, and the jury
awarded $34 million in damages based on these lost profits and
other injuries. The Federal Circuit set aside the jury's
damages award, concluding that under the "presumption against
extraterritoriality" patent damages can never be based on lost
foreign sales of an infringing product, even when such lost sales
are the direct and foreseeable result of patent infringement inside
the United States. Cert. petition filed 8/23/13. |
WildTangent, Inc. v.
Ultramercial, LLC, et al., No. 13-255
Question Presented: When is a patent's reference to a computer, or computer-implemented service like the Internet, sufficient to make an unpatentable abstract concept patent eligible under 35 U.S.C. § 101? Cert. petition filed 8/23/13. |
Public Patent Foundation, Inc.
v. McNeil-PPC, Inc., et al., No. 13-161
Question Presented: The Patent Act has long forbidden falsely marking and
advertising unpatented articles as patented. The false marking
statute, 35 U.S.C. § 292, also long provided a qui tam cause
of action for any member of the public to pursue violators on the
government's behalf. In June 2009, Petitioner filed such an
action against Respondent. In September 2011, more than two years
after Petitioner filed this case, Congress passed the Leahy-Smith
America Invents Act (AIA) that contained amendments to the false
marking statute. One such amendment eliminated qui tam
standing for members of the public to bring false marking claims.
The AIA applied its changes to the false marking statute
retroactively and, as a result, the district court dismissed
Petitioner's case because Petitioner no longer had standing
under the retroactively amended version of the statute. The Court
of Appeals summarily affirmed. Cert. petition filed 8/1/13, waiver of respondent United States filed 8/22/13. |
Maersk Drilling USA, Inc. v.
Transocean Offshore Deepwater Drilling, Inc., No.
13-43
Question Presented: Direct infringement of a U.S. patent occurs when a person "makes, uses, offers to sell, or sells any patented invention, within the United States," or "imports into the United States any patented invention." 35 U.S.C. § 271(a). Petitioner offered, negotiated, and agreed in Scandinavia to provide a Norwegian oil company with drilling services using Petitioner's oil rig. Consistent with the contract's express terms, before bringing the rig into or using it in U.S. waters, Petitioner modified it so that it did not infringe any U.S. patent. The Federal Circuit nonetheless held that Petitioner offered to sell and sold an infringing rig "within the United States." Although all of the relevant negotiations occurred overseas and Petitioner modified the rig to avoid any infringement in U.S. waters, the Federal Circuit held that entry into a service contract in Scandinavia violated U.S. patent law because the parties were U.S. companies and the contract contemplated performance in the United States. The Federal Circuit also extended U.S. patent law by deeming an offer to provide services using a rig to be an "offer to sell" or "sale" of the rig itself. The question presented is: Whether offering, negotiating, and entering into a contract in Scandinavia to provide services using a potentially patented device constitutes an "offer to sell" or "sale" of an actually patented device "within the United States," under 35 U.S.C. § 271(a). Cert. petition filed 7/8/13. |
The Fox Group, Inc. v. Cree,
Inc., No. 12-1378
Question Presented: The Federal Circuit's opinion below, for the first time in American jurisprudence, invalidated a patent based on a prior "invention" that provided no benefit to the public, because the prior inventor concealed how to make the invention, did not commercialize it, and did not apply for a patent. The Federal Circuit based its holding on a distinction between "process" and "product" patents that does not exist in the plain language of the relevant statute, 35 USC § 102. Did the Federal Circuit err in interpreting § 102(g)(2) to allow non-enabling disclosures to invalidate product patents, a result that will create significant uncertainty in litigation involving product patents and penalize patent holders who publicly shared their inventions? Cert. petition filed 5/21/13, waiver of respondent Cree, Inc. filed 6/14/13, conference 9/30/13, response requested 8/5/13. |
Broadcom Corp. v. Azure
Networks, LLC, et al., No. 12-1475
Questions Presented:
WilmerHale represents petitioner Broadcom Corp. |
Intema Ltd. v. Perkinelmer,
Inc., No. 12-1372
Questions Presented: The Federal Circuit reversed the District Court and held the claims of Intema's patent ineligible under 35 U.S.C. §101 by misapplying Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) in a manner that creates erroneous, rigid rules for determining patent ineligibility in cases involving laws of nature. If the Judgment of the Federal Circuit is not reversed, it will have the practical effect of rendering most diagnostic, screening and personal medicine tests unpatentable. The questions presented by this Petition for a Writ of Certiorari are:
Cert. petition filed 5/16/13, conference 9/30/13. |
Raylon, LLC v. Complus Data
Innovations, Inc., et al., No. 12-1354
Questions Presented: The Federal Circuit reversed a Trial Court's denial of sanctions based on its de novo finding that the Plaintiff's patent case was frivolous in violation of Fed. R. Civ. P. Rule 11. In its ruling, the Federal Circuit gave no deference to the Trial Court findings and created a formalistic rule that evidence of non-trivial settlements cannot be considered to determine objective reasonableness of the lawsuit under Rule 11, which conflicts with several other circuits. The Federal Circuit found that settlement evidence "has no place in the Rule 11 analysis," which ignores the widely-recognized relevance such evidence has in showing the views of objective litigants (e.g. settling Defendants) as to whether the underlying lawsuit was reasonably calculated to elicit a favorable outcome. Petitioner respectfully requests that the Supreme Court grant this Petition for a Writ of Certiorari on the following questions.
Cert. petition filed 5/10/13, conference 9/30/13. |
Nokia Inc., et al. v. ITC,
No. 12-1352
Questions Presented: Section 337 of the Tariff Act of 1930 permits the International Trade Commission to exclude from entry into the United States an article that infringes a valid and enforceable patent. Under what is known as the "domestic industry" requirement, however, it may do so only when a complainant establishes that there is "an industry in the United States, relating to the articles protected by the patent." Respondent InterDigital asserted that petitioner Nokia violated section 337 by importing cellular handsets into the United States that allegedly infringed InterDigital's patents. After a five-day evidentiary hearing, a judge concluded that no infringement had occurred. In a divided opinion, the Federal Circuit, employing de novo review, concluded that the patent claims had been erroneously construed and reversed the non-infringement determination. The court also held that "licensing alone" is sufficient to satisfy the domestic industry requirement. In denying rehearing, the panel majority reiterated that licensing alone satisfies the domestic industry requirement as long as the patent concerns "the article that is the subject of the exclusion proceeding." The questions presented are:
Cert. petition filed 5/10/13. |
CoreValve Inc. v. Lifesciences
AG, No. 12-1325
Questions Presented: The "enablement" provision of the Patent Act, 35 U.S.C. § 112(a), states that a patent "shall contain a written description of the invention *** in such full, clear, concise, and exact terms as to enable any person skilled in the art *** to make and use the same." The Federal Circuit's cases are in conflict over the meaning and application of this core patentability requirement. The patent at issue claims a collapsible prosthetic valve attached to a stent "for implantation in a body channel." The specification describes the claimed invention as directed primarily to a valve implanted by catheter in the human heart. Yet the specification does not disclose how to make a valve that is small and stable enough to achieve that purpose. Engineers attempting to apply the patent could not make a valve suitable for human implantation despite many years of effort, and no experimental animal survived implantation for more than a few hours. The questions presented are:
Cert. petition filed 5/6/13, waiver of respondent Edwards Lifesciences AG filed 5/9/13, response requested 5/20/13, conference 9/30/13. |
Technology Patents LLC v.
T-Mobile (UK) Ltd., et al., No. 12-1292
Questions Presented:
Cert. petition filed 4/26/13, waiver of respondent AT&T Mobility, LLC filed 5/13/13, waivers of respondents T-Mobile (UK) Ltd., H3G S.P.A., Advanced Info Service PLC, et al., PCCW Mobile HK Ltd, KDDI, Corp. filed 5/28/13, waiver of respondent TMN – Telecomunicacoes moveis Nacionais, S.A. filed 5/29/13, conference 9/30/13. |
Finjan, Inc. v. Patent and
Trademark Office, No. 12-1245
Question Presented: Whether all prior art should be presumed enabled in the United States Patent and Trademark Office. Cert. petition filed 4/11/13, conference 9/30/13. |
Octane Fitness, LLC v. Icon
Health & Fitness, Inc., No. 12-1184
Question Presented: Does the Federal Circuit's promulgation of a rigid and exclusive two-part test for determining whether a case is "exceptional" under 35 U.S.C. § 285 improperly appropriate a district court's discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court's precedent, thereby raising the standard for accused infringers (but not patentees) to recoup fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or coerce unwarranted settlements from defendants? Cert. petition filed 3/27/13, conference 6/20/13, conference 9/30/13. |
Highmark Inc. v. Allcare Health
Management Systems, Inc., No. 12-1163
Question Presented: IThe Patent Act provides that a "court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. A case is "exceptional" if it is objectively baseless and brought in bad faith. After living with this case for more than six years, the District Court found that it was objectively baseless and brought in bad faith, and it awarded fees. Over a strong dissent, a Federal Circuit panel reversed, holding that a district court's objective baselessness determination is reviewed "without deference." Pet. App. 9a. The Federal Circuit denied rehearing en banc by a vote of six to five. One of the two pointed dissents from that denial accurately observed that the decision below "deviates from precedent *** and establishes a review standard for exceptional case findings in patent cases that is squarely at odds with the highly deferential review adopted by every regional circuit and the Supreme Court in other areas of law." Pet. App. 191a. The question presented is: Whether a district court's exceptional-case finding under 35 U.S.C. § 285, based on its judgment that a suit is objectively baseless, is entitled to deference. Cert petition filed 3/25/13, conference 5/23/13, response requested 5/14/13, conference 9/30/13. |
Mirowski Family Ventures, LLC
v. Medtronic, Inc., et al., No. 12-1116, vide 12-1128
Question Presented: "Claim construction is the single most important event in the course of a patent litigation. It ... is often the difference between infringement and non-infringement, or validity and invalidity. Despite the crucial role that claim construction plays in patent litigation, our rules are still ill-defined and inconsistently applied, even by us. Commentators have observed that claim construction appeals are 'panel dependent' which leads to frustrating and unpredictable results for both the litigants and the trial court." Retractable Techs., Inc. v. Becton, Dickinson & Co., 659 F.3d 1369, 1370 (Fed. Cir. 2011) (en banc) (Moore, Circuit Judge, with whom Rader, Chief Judge, joins, dissenting from the denial of the petition for rehearing en banc). Each of the two questions presented below are directed to this "single most important event."
Cert. petition filed 3/4/13, conference 5/16/13. WilmerHale represents respondent Medtronic, Inc. |
Sony Computer Entertainment
America LLC, et al. v. 1st Media, LLC, No. 12-1086
Question Presented: Did the Court of Appeals for the Federal Circuit err in restricting district courts' equitable discretion in evaluating patent unenforceability, contrary to this Court's precedent in Keystone Driller, Hazel-Atlas, and Precision Instrument, by applying a rigid test that (a) forecloses district courts from considering the entire circumstantial record; and (b) precludes district courts from granting equitable remedies where a patent applicant has violated the PTO's duty of candor. Cert. petition filed 3/4/13, conference 5/9/13, CVSG 5/13/13. |
Akamai, et al. v. Limelight
Networks, Inc., No. 12-960, vided 12-786 and 12-800
Question Presented: Cross-petitioners Akamai Technologies, Inc. and the
Massachusetts Institute of Technology (collectively,
"Akamai") respectfully file this conditional
cross-petition for a writ of certiorari to review the judgment of
the United States Court of Appeals for the Federal Circuit in this
case. The Court should deny the petition for a writ of certiorari
in No. 12-786 and, if the Court does so, it need not consider this
cross-petition. If the Court grants that petition, however, it
should also grant this conditional cross-petition so the Court can
fully consider the question of liability for joint infringement,
not just under one provision of the patent infringement statute (35
U.S.C. § 271(b)) as Limelight requests, but under all relevant
provisions of that statute. The question presented by this
conditional cross-petition is: Cross-petition for cert. filed 2/1/13, conference 6/6/13, conference 6/13/13, conference 6/20/13, CVSG 6/24/13. |
Limelight Networks, Inc. v.
Akamai Technologies, Inc., et al., No. 12-786
Question Presented: Akamai holds a patent claiming a method involving redirecting
requests for Internet content and selecting optimal servers. The
Federal Circuit acknowledged that neither Limelight nor customers
using Limelight's service directly infringe Akamai's patent
under 35 U.S.C. § 271(a) because no one performs all the steps
of the patented method. App. 6a, 30a. The Federal Circuit
nevertheless held that Limelight could be liable, under 35 U.S.C.
§ 271(b), for inducing infringement if (1) it knew of
Akamai's patent; (2) it performed all but one of the steps of
the method; (3) it induced its customers to perform the final step
of the claimed method; and (4) the customers performed that step.
App. 30a. The question presented is: Cert. petition filed 12/28/12, conference 6/6/13, conference 6/13/13, conference 6/20/13, CVSG 6/24/13. |
The Association for Molecular
Pathology, et al. v. Myriad Genetics, Inc., et al., No.
11-725
Questions Presented:
Cert. petition filed 12/7/11, conference 2/17/12, likely being held, perhaps for Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150. Cert. petition granted on 3/26/12; judgment vacated and case remanded for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 500 U.S.__(2012). The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. |